Ex Parte Evans et al

Patent Trial and Appeal BoardNov 27, 2012

09935982 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 09/935,982 08/23/2001 John W. Evans 97541.00011 2268 21832 7590 11/27/2012 MCCARTER & ENGLISH, LLP HARTFORD CITYPLACE I 185 ASYLUM STREET HARTFORD, CT 06103 EXAMINER DELCOTTO, GREGORY R ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 11/27/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte JOHN W. EVANS and J. THOMAS LIGHT ______________ Appeal 2012-006275 Application 09/935,982 Technology Center 1700 _______________ Before CHARLES F. WARREN, CATHERINE Q. TIMM, and GEORGE C. BEST, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal to the Board from the final rejection of claims 30 and 40-45, requesting review of grounds of rejection advanced on appeal: under 35 U.S.C. § 102(b), claims 30 and 41-45 over Reny (WO 89/09806 A1); and under 35 U.S.C. § 103(a), claim 40 over Reny, and claims 30 and 40-45 over Meyer (US 5,118,434).1, 2 App. Br. 6, 12; Ans. 4, 5, 6. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2011). 1 The rejection under the judicially created doctrine of obviousness-type double patenting in the Answer is moot in view of the terminal disclaimer with respect to Evans (US 7,655,154 B2) filed March 2, 2012 and approved March 13, 2012. Ans. 7; Reply Br. 7. 2 The Examiner withdrew the ground of rejection over Wood (US 4,455,248). Ans. 4. Appeal 2012-006275 Application 09/935,982 2 An oral hearing was held November 5, 2012. We reverse the decision of the Primary Examiner. Claim 30 illustrates Appellants’ invention of a method for producing an ethylene glycol based non-aqueous heat transfer fluid having a reduced oral toxicity, and is representative of the claims on appeal: 30. A method for producing an ethylene glycol based non-aqueous heat transfer fluid having a reduced oral toxicity comprising the steps of: (a) providing a non-aqueous heat transfer fluid comprising ethylene glycol; (b) mixing a sufficient amount of non-aqueous propylene glycol with the non-aqueous heat transfer fluid comprising ethylene glycol to achieve a concentration of the propylene glycol that is between about 5 percent and 30 percent of the weight ethylene glycol and the propylene glycol in the resulting heat transfer fluid, wherein the resulting fluid is less toxic than 10,000 mg/kg on the basis of an acute LD50 oral toxicity in rats; and (c) adding at least one corrosion inhibiting additive, wherein the corrosion inhibiting additive is soluble in both ethylene glycol and propylene glycol, wherein the resulting heat transfer fluid contains no additive that requires water in the heat transfer fluid to dissolve the additive or to enable the additive to function and wherein the resulting non-aqueous heat transfer fluid contains less than 0.5% by weight water. OPINION I. We agree with Appellants that the Examiner erred in finding that Reny would have described to one skilled in the art an embodiment of a method for producing an ethylene glycol based non-aqueous heat transfer fluid which contains propylene glycol within the claimed range by adding at least one specified corrosion inhibiting additive to the mixture of ethylene glycol and propylene glycol, “wherein the resulting non-aqueous heat transfer fluid contains less than 0.5% by weight water,” that falls within Appeal 2012-006275 Application 09/935,982 3 claim 30 in a manner that enables the practice of that embodiment without undue experimentation. Ans. 4-5, 8-10; App. Br. 6-10; Reply Br. 4-5. See, e.g., ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008). We find that a preponderance of the evidence in Reny does not support the Examiner’s position that the reference describes an embodiment of a method that produces a coolant composition which contains no water or less than 0.5% by weight water. Ans. 4-5, 8-10. In this respect, we find that Reny describes a method in which up to 10 weight percent of water is first dissolved in an alkylene glycol, which amount can be “[p]referably less than about 5 weight percent and more preferably about 3 percent of water.” Reny 5:28-35. We find that Reny describes that “[m]ost preferably the alkylene glycol is used with essentially no water, i.e., less than about 1 weight percent.” Reny 5:33-35. Reny further describes that “[p]referably the coolant composition contains not more than 5 weight percent, more preferably not more than 3 weight percent and more preferably not more than 1 weight percent water.” Reny 6:34 to 7:2. Reny describes embodiments in Examples 1 and 2 in which a coolant compositions is prepared with “20 parts of propylene glycol containing 4 parts of water” (Example 1) and a coolant composition is “similarly prepared” “using a mixture of ethylene glycol and propylene glycol” (Example 2), each composition containing “1 wt pts” water. Reny 7:18 to 8:2, Table 1. Reny further describes comparative coolant compositions in Examples No. C1 and No. C2 prepared with “propylene glycol (Example No. C1)” and a “mixture Appeal 2012-006275 Application 09/935,982 4 of uninhibited propylene glycol and ethylene glycol” (Example No. C2), each composition containing “<1 wt pts” water. Reny 8:3-8, Table 1. We find that Reny neither describes a method that “used” an alkylene glycol containing “less than about 1 weight percent” and the coolant composition prepared therewith, nor the method that results in the coolant compositions of Examples No C1 and C2 wherein the “<1 wt pts” water is in fact less than 0.5% by weight water. Thus, as Appellants contend, the Examiner has not established a prima facie case of anticipation over Reny, and accordingly, we reverse the ground of rejection of claims 30 and 41-45 under 35 U.S.C. § 102(b) over Reny. On this record, we also reverse the ground of rejection of dependcnt claim 40 under 35 U.S.C. § 103(a) over Reny based on the same factual foundation because the Examiner does not establish that prima facie Reny would have led one of ordinary skill in the art to a method that produces a coolant composition which contains no water or less than 0.5% by weight water. Ans. 5-6, 10-11; App. Br. 10-12. II. We agree with Appellants that the Examiner erred in determining that Meyer would have led one of ordinary skill in the art to methods falling within claim 30 without considering the evidence of nonobviousness in the Specification and in the Evans Declaration3 relied on by Appellants. Ans. 13-14; App. Br. 14-15. It is well settled that as a procedural matter, “[a]fter evidence or argument is submitted by the applicant in response [to a prima facie case of unpatentability], patentability is determined on the totality of 3 Declaration of John Evans under 37 C.F.R. § 1.132, executed January 23, 2007, and filed January 25, 2007. Appeal 2012-006275 Application 09/935,982 5 the record, by a preponderance of evidence with due consideration to persuasiveness of argument.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). When Appellants submit relevant evidence, the Examiner must consider such evidence. In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007). A claimed invention “cannot be held to have been obvious if competent evidence rebuts the prima facie case of obviousness,” and thus, failure to consider submitted evidence constitutes error. Sullivan, 498 F.3d at 1353. Indeed, the Examiner merely “maintains” that the “data” in the Specification relied on by Appellants “is insufficient to overcome the prior art rejections applied above,” and that “the data presented in the instant specification is not sufficient to show the unexpected properties of the claimed invention in comparison to comparison falling outside the scope of the instant claims,” without establishing why this is so with respect to the teachings of Meyer. The Examiner’s failure to consider the totality of the record with respect to the ground of rejection based on Meyer is dispositive. Indeed, with respect to other issues raised by Appellants, we find that contrary to Appellants’ position, Meyer’s disclosure of a method for forming a composition containing “optionally up to 50 percent by weight water” when considered in light of the disclosure of Meyer taken as a whole, would have reasonably suggested to one of ordinary skill in the art that Meyer’s compositions need not contain water before water is added thereto in using such a composition as a heat transfer fluid, as the Examiner contends. Ans. 12-13; App. Br. 16-17; Reply Br. 5-6. Meyer col.2 ll.3, 20-21, 38-41, 58-61, 61, col.4 l.68 to col.5 l.2, Exs. 1, 8, col.6 l.60, col.7 l.36, col.8 ll.15-18. Appeal 2012-006275 Application 09/935,982 6 Moreover, we determine that contrary to Appellants’ position, Meyer’s disclosure of a method for forming a composition containing one or more alkylene glycols, preferably including ethylene glycol and propylene glycol, would have reasonably suggested to one of ordinary skill in the art to combine these two glycols in different ratios for the purposes of forming a compositions that need not contain water before water is added thereto in using such a composition as a heat transfer fluid, as the Examiner contends. Ans. 6, 12; App. Br. 13; Reply Br. 6-7. Meyer col.1 ll.55-56, col.2 ll.8-10, 44-45, 525, 55-57, col.6 l.51, col.7 ll.22-24, col.8 ll. Thus, we are of the opinion that prima facie Meyer would have reasonably disclosed the claimed method to one of ordinary skill in the art requiring the Examiner to determine patentability based on the totality of the record, including the evidence in the Specification and the Evans Declaration, by a preponderance of evidence with due consideration to the persuasiveness of Appellants’ arguments. The Examiner has erred in not considering the evidence in the totality of the record in light of Appellants’ arguments and accordingly, we reverse the ground of rejection of claims 30 and 40-45 under 35 U.S.C. § 103(a) over Meyer. The Primary Examiner’s decision is reversed. REVERSED cam